Illinois Tool Works Inc. v. Solo Cup Co.
| Citation | 317 F. Supp. 1169 |
| Decision Date | 24 June 1970 |
| Docket Number | No. 69 C 480.,69 C 480. |
| Parties | ILLINOIS TOOL WORKS INC., Plaintiff, v. SOLO CUP CO., Inc., Defendant. |
| Court | United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois) |
James P. Hume and Granger Cook, Jr., Hume, Clement, Hume & Lee, Richard R. Trexler, Olson, Trexler, Wolters & Bushnell, and Robert W. Beart, Chicago, Ill., for plaintiff.
James J. Hamill, Anderson, Luedeka, Fitch, Even & Tabin, Chicago, Ill., for defendant.
Plaintiff Illinois Tool Works Inc. (ITW) has brought suit against defendant Solo Cup Company (Solo) for infringement of two of its patents directed to nestable cups, United States Patent Numbers 3,139,213 and 3,091,360. The patented devices, developed by Bryant Edwards for ITW, both describe thin-walled plastic nestable containers having side-wall "Z" shaped stacking facilities.1 The significant difference between the two patents is that the '213 covers continuous stacking rings whereas the '360 encompasses interrupted rings.
Solo has moved for summary judgment as to claims 1, 2 and 3 of the '360 patent on the ground that these claims are invalid for obviousness within the meaning of 35 U.S.C. § 103. Pursuant to an order entered March 6, 1970, the parties briefed only the issues of whether a genuine issue of material fact exists and whether public knowledge and use of plaintiff's containers embodying continuous stacking rings prior to the invention of the '360 patent constitute prior art as to that patent. Only if these issues are decided favorably to defendant need the validity issue itself be briefed.
Solo maintains that Miller, U. S. Patent No. 2,985,914, Caine, U. S. Patent No. 3,845,887, the cups made pursuant to specifications later incorporated in the '213 patent, and plaintiff's statements at the Sweetheart trial characterizing the '213 and '360 as the "same general inventive concept," taken together, render the '360 patent obvious. This court held in the Continental Can case, supra, 273 F. Supp. at 115, that Miller, 2,985,914 did not render the '213 patent obvious, and I incorporated this discussion of the Miller finding in the findings as to the validity of the '360 patent Sweetheart Plastics, supra, 306 F.Supp. at 364. Similarly, the Caine patent was presented for consideration at the Sweetheart trial. Consequently, Solo must rely on the cups made pursuant to the '213 specifications, and on plaintiff's characterization of the similarity of the two patents, in support of its obviousness contention.
Although patent validity is a question of law, a number of factual determinations must be made before a decision as to obviousness can be made. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). Assuming that the cups cited by defendant are prior art, what they teach to one with ordinary skill in the art is a question best determined with the aid of expert testimony. Moreover, whether plaintiff's characterizations of the '213 and '360 patents constitute admissions of the obviousness of the latter would also seem to present factual questions. Because there are genuine issues of material fact which remain to be resolved, summary judgment is improper.
But, although this is not the proper time to determine the obviousness issue, the question whether the cups cited by defendant constitute prior art as to the '360 patent must be resolved before trial and, having been briefed, may appropriately be determined in this opinion. The relevant factual background is undisputed. Edwards conceived the idea of a nestable container with a continuous stacking facility in August, 1957, and a patent application therefor was filed in November, 1957. ITW accepted an order for 1,000,000 cups made pursuant to the patent application in December, 1957 and delivered 50,000 of them to Automatic Canteen in April, 1958, which used them in vending machines in April and May of that year. In June, 1958, Edwards conceived the nestable container with the interrupted stacking ring.
In October, 1958 ITW filed a continuation-in-part application covering both the continuous and interrupted stacking facilities, and abandoned the earlier application. In May, 1959 ITW filed a divisional application which matured into the '213 patent, and the continuation-in-part application matured into the '360 patent. The '360 patent was issued first, on May 28, 1963, while the '213 patent was not issued until June 30, 1964.
It is defendant's contention that the sale and public use of the continuous stacking cups in December, 1957 and April, 1958 constitute "prior art" as to the '360 patent to be considered pursuant to 35 U.S.C. § 103.2 "Prior art" as used in that statutory provision includes all that qualifies as "prior art" under 35 U.S.C. § 102, Graham v. John Deere Co., supra, at 15, 86 S.Ct. 684, 15 L.Ed.2d 545; Application of Harry, 333 F.2d 920, 923-924, 51 C.C.P.A. 1541 (1964), and defendant contends that this public use of the continuous stacking cups is encompassed within the language "known or used by others" found in § 102(a).3
Defendant's interpretation is certainly a correct literal application of the language of § 102(a), for after the continuous stacking cups were purchased by Automatic Canteen and resold to consumers the invention was "known or used by others." But plaintiff argues that the language of § 102(a) must be read to mean "invented by others" as well as "known or used by others."
The arguments offered in support of plaintiff's interpretation of the statute are not persuasive. ITW's contention that an individual's earlier invention cannot be prior art as to his later inventions is simply incorrect. It is fundamental that a previously issued valid patent may constitute prior art as to a subsequent invention by the same inventor. See, e. g., Application of Jaeger, 241 F.2d 723, 726, 44 C.C.P.A. 767 (1957), wherein the Court stated that "the law makes no distinction between prior art of an applicant's own making and the prior art of others." And it is equally clear that an invention unpatentable pursuant to 35 U.S.C. § 102(b),4 because the application therefor was untimely filed, constitutes prior art as to a later invention by the same person and is entitled to consideration when the patentability of the later invention is at issue. International Tooth-Crown Co. v. Gaylord, 140 U.S. 55, 11 S.Ct. 716, 35 L.Ed. 347 (1891); Tool Research and Engineering Corp. v. Honcor Corp., 367 F.2d 449 (9th Cir. 1966); Cataphote Corporation v. De Soto Chemical Coatings, Inc., 356 F.2d 24 (9th Cir. 1966); Dix-Seal Corporation v. New Haven Trap Rock Company, 236 F. Supp. 914 (D.Conn.1964).
Plaintiff also argues that literal interpretation of § 102(a) would induce inventors to keep their developments secret until they were perfected. But the same can be said of the rule just referred to making an individual's earlier patents prior art as to his later ones. When an inventor chooses to exploit his creations commercially, all subsequent variations or improvements, by whomever made, must independently meet the tests of patentability. Whatever is in the public domain at the time of conception of the invention,...
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Illinois Tool Works, Inc. v. Solo Cup Company, 18960.
...judgment as to Claims 1, 2 and 3 of the '360 patent, on the ground that these claims were invalid for obviousness. The District Court, 317 F.Supp. 1169, denied Solo's motion for summary judgment but decided that the '213 cups delivered to Automatic Canteen in April 1958 and resold for publi......